Articles

NATIONAL UTILITY MODELS

A patent for utility model grants protection to new models capable of conferring a particular efficiency or ease of application or use to machines, or parts thereof, instruments, tools, or objects of use in general, such as new models consisting of a peculiar conformation, arrangement, configuration, or combination of the parts.

The effects of the patent for utility model extend to the models that achieve equal utility, provided that they use the same innovative concept.

The utility model grants protection in the Italian territory, in the State of San Marino and it may be recognized in the Vatican State.

The inventive level required for a utility model patent to be valid is lower than the level necessary to the validity of an invention patent. This feature makes it a valid instrument to protect “small inventions” or, as the law indicates, “improvements carried out to confer a greater efficiency or handiness to something already existing”.

Applications are to be filed in Italy at the Provincial Offices of the Ministry of Industry (UPICA) or at Italian Patent and Trademark Office (UIBM).

 

Requirements for  utility models to be registrable:

 

  • Novelty.
  • Inventive step.
  •  Industrial application provided for invention patents, but at a more limited level.
  • Production processes, chemical inventions and electric/electronic circuits are not protectable as utility models.

 

It is important to know that:

 

  • Any divulgation before the filing date of the application for a utility model patent  or before the priority date could make the model void.
  • The inventive step must exist upon filing the application for a utility model, or at the priority date, for the expert in the relative field who knows the state of the art
  • The object of the model must be usable in industry, including service and agricultural sectors.
  • 18 months after the application filing date, or the priority date, or earlier, provided that who is violating the exclusive right has been notified, the applicant has the right to legally prevent any third party from using the invention starting court actions, as well as request precautionary measures. This right may be exercised earlier if an advance public accessibility has been requested upon filing the application.
  • The application for utility model is not subjected to a prior art search by the UIBM, and therefore it is released after a formal examination of the description and drawings.
  • Exclusive patent  rights can be exercised even before the concession.
  • In case of no utilization of the utility model, third parties may request the institution of compulsory license to be applied.
  • No opposition procedure is provided.

 

Ownership of a utility model:

 

  • Any natural or legal person of Italian or foreign nationality.

 

Priority:

 

  • It is possible to claim the priority of the first application for utility model filed in one of the other member states of the Paris Convention or the WTO within 12 months running from the date of that first application. More than one priority is permitted.
  • A first application for utility model in Italy may be the basis for a priority right when subsequent applications are filed for the same model in other states party to the Paris Convention or the WTO.

 

Duration and renewal of the Italian utility model:

 

  • The utility model has a duration of 10 years running from the filing date.
  • It is subject to the payment of a maintenance fee before the expiry of the first five-year period calculated from the filing date.